Patent Portfolio

Critically, a patent specification must meet the legal requirements of all countries in which a patent is to be obtained, not just the requirements of the country in which the invention is conceived or developed.

This generally means that the patent specification – whether a provisional or complete - must present the subject matter of the invention in a manner that is clear and complete enough to enable the relevantly skilled worker to make and use the invention without undue experimentation.

Further, the level of detail must credibly demonstrate that the inventor or patent applicant had “possession of an invention” in the form of the best example of the invention and other implementations of it that may not, at the time of drafting, have been reduced to practice.

Importantly, a highly technical discussion of the invention is not the only important factor. What is equally important is an awareness of, and experience in handling the legal issues that may later arise (particularly those peculiar to specific invention subject matter). This insight enables a more informed specification to be developed, providing for flexibility in patent strategy so that legal issues which may arise many years after patent drafting can be dealt with.

Patent Filing

U & S Legal consultants provides efficient patent filing services to Indian and International Corporates, Individual inventors and Law Firms. We diligently monitor all deadlines taking necessary steps.

Types Of Applications Being Filed At The Indian Patent Office

Ordinary Application- is a first application made for an invention without claiming any priority. This application should be accompanied by a complete specification and claims. (In India, a Provisional Application can be filed too.)

Convention Application- is an application which claims a priority based on a same or substantially same invention(s) filed in one or more of the convention countries in accordance with Paris convention. The application must be filed within 12 months from the date of first application in the convention country. PCT International Application- is an application which is filed in accordance with the Patent Cooperation Treaty (PCT). A PCT Application can be filed within 12 months of the Indian Filing (Priority) Date or directly without filing in India, by filing Foreign Filing License in accordance with the Section 39 of the Indian Patent Act.

PCT National Phase Application- is an international application which can enter the Indian National Phase within 31 months from the Priority Date or International Filing Date whichever is earlier.

Filing Requirements

• Full name, Address, Nationality of each Applicant and inventor.

• A copy of the Complete Specification, claims, abstract and drawings (if any), in English Language.

• Verified English translation of the priority document. The same can be submitted subsequent to Filing as well.

• A Power of Attorney signed by an Applicant or an authorized person of each applicant, in original. The same can be submitted subsequent to Filing as well.

• Proof of Right: is a document evidencing transfer of rights from inventor to Applicant (It can be Form 1 signed by all inventors or Notarized Assignment Deed). The same must be submitted within six months of the Indian Filing Date.

• The duly completed Applicable Forms required for Indian Patent Filing shall be provided to our clients, for the signatures, upon entrusting us with filing an application in India.

• The Indian Patent Office requires details of the Corresponding Applications filed outside India (such as Name of Countries, Application Date and Number, Status of Application, Date of publication etc.) according to Section 8 of the Indian Patent Act. Such Details are filed in Form 3 and can be filed within six months of the Indian Filing Date. Further on change of any status of such Foreign Application including any communication with the respective Patent Office, it is an obligation of the Applicant to inform the Indian Patent Office of any status change within six months of any such change.

Important Deadlines

• A Request for Examination must be filed within 48 months of the Priority Date or Filing Date, whichever is earlier. While the Request for Examination can be filed any time with this timeframe, the application shall be examined only after publication. (An Application shall ordinarily be published within one month from the date of expiry of 18 months from the Priority Date or Filing Date, whichever is earlier).

• Form 3 must be filed within six months of any activity (Filing, Publication, Any Examination Report Receipt/Response etc.) of any application filed in other country/countries.

• Working of invention statement, in Form 27, must be filed by every patentee and licensee in respect of every calendar year within three months of the end of each year. The form will contain information such as periodical statements as to the extent to which the patented invention has been commercially worked in India.

Patent Prosecution

Patent Prosecution refers to a process of interaction between an applicant/representative and a patent office with respect to the patent. Patent prosecution process involves high level of negotiation with the patent office and therefore has high-impact value for the client. The preparation of responses during the prosecution phase requires an in-depth analysis of the invention along with the prior arts taking into consideration the patentability criterions. The First Examination Report (FER) is issued ordinarily within 12 months of filing Request for Examination, provided the Application is published at the Indian Patent Journal.

Our prosecution services include:

• Drafting of Responses to Examination Reports.
• Strategizing amendments and arguments for the patent application for maximizing impact.
• Technical Analysis of Examination Report.
• Technical Analysis of Cited Prior Arts.

Trademark Registration

A trademark, trade mark, or trade-mark is a recognizable sign, design, or expression which identifies products or services of a particular source from those of others, although trademarks used to identify services are usually called service marks. The trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher, or on the product itself. For the sake of corporate identity trademarks are also being displayed on company buildings.

A trademark identifies the brand owner of a particular product or service. Trademarks can be licensed to others; for example, Bullyland obtained a license to produce Smurf figurines; the Lego Group purchased a license from Lucasfilm in order to be allowed to launch Lego Star Wars; TT Toys Toys is a manufacturer of licensed ride-on replica cars for children. The unauthorized usage of trademarks by producing and trading counterfeit consumer goods is known as brand piracy.

The owner of a trademark may pursue legal action against trademark infringement. Most countries require formal registration of a trademark as a precondition for pursuing this type of action. The United States, Canada and other countries also recognize common law trademark rights, which means action can be taken to protect an unregistered trademark if it is in use. Still common law trademarks offer the holder in general less legal protection than registered trademarks.

Trademark registration enables owners to easily establish their right to the trademark in court and earn royalties. It also deters piracy and prevents similar company names from being registered by other businesses. You can conduct a trademark search, to check if your brand name clashes with existing trademarks. In India, you could get a ™ within three days, but it takes up to two years for it to be registered so that you can use the ® symbol.

Documents Required For Trademark Registration

1. Identity and Business Proof
Identity proof like passport, drivers license, aadhaar card, voters id or ration card for the trademark owner or person authorised by the trademark owner for filing the trademark application.In case of legal entity or registered body, then partnership deed or incoporation certificate or registration certificate is required.

2. Logo with Tagline
If the trademark application is made for a word, logo is not required. In all other cases, logo must be submitted preferably in black and white format. The logo must contain the exact words mentioned in the trademark application.

3. Form-48 and User Affidavit
Form-48 authorises an Attorney to file a trademark application on your behalf with the Trademark Registrar. In case a claim for previous use is made on the trademark application, then trademark user affidavit must be submitted.

Following marks can be registered under the Indian trademark law:-
- Names
- Invented / Coined Words
- Numerals
- Letters
- Devices
- Combination of colors
- Shape of goods
- Slogans
- Signature
- Sound Marks

A trademark public search can be conducted in India on the Indian Trademark Registry's Website at: https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx

Design Portfolio

Design registration gives you the exclusive right to make, import, sell, or use a product that embodies the design for a limited period.

What types of design can be registered?
A registered design protects one or more visual features of a product. This could be a three-dimensional feature, such as the shape or configuration of a product, or a two-dimensional feature, such as pattern or ornamentation of the product. Even if they serve a functional purpose, these features can still be protected.

A registered design must be new and distinctive
A design is considered to be ‘new’ unless it is identical to another design, and is considered to be ‘distinctive’ unless it is substantially similar in overall impression to another design. Your design must meet this criteria for your design registration to be valid.

When assessing if two designs are similar, more weight is given to the similarities between the designs than to the differences. If there are particular visual features that give a design its distinctive character, and are therefore more valuable, we can emphasise these by filing a “Statement of Newness and Distinctiveness”. When comparing the design to other designs, any features emphasised in a Statement of Newness and Distinctiveness are given greater weight.

Filing requirements:
An application for Design Registration needs to be filed with the Controller of Designs, The Patent Office at Kolkata. However, the application can also be filed at any of the four branch office of The Patent Office at New Delhi, Mumbai, Chennai or Ahmedabad and the application received by the Branch Offices is transmitted to the Head Office for processing.

For filing of applications for registration of design in India, the following procedure needs to be followed:

a) Application duly filled in on Form 1 along with the prescribed fees, stating name & full address, nationality of the applicant. If the Applicant is not a natural person the legal status and the place of incorporation.

b) Name of the article to which the design is to be applied.

c) Class & Sub Class of the article embodying the design is applied under the Locarno Classification.

d) Representations illustrating the views of the article wherein the originality lies. The representations can be in the form of photographs or drawing figures showing the perspective, front, rear, top, bottom and side views of the article (2 copies of each view) If the design is to be registered in more than one class, a separate application shall be filed for each class.

e) A statement of novelty and disclaimer (if any) in respect of mechanical action, trademark, word, letter, numerals should be endorsed on each representation sheet and should be duly signed and dated.

f) When colour combination is the essence of a design as applied to an article, the same shall be clearly depicted in the representation.

After examination of the application by the Design Office at Kolkata, objections, if any, are raised thereto. On removal of the objections, the certificate granting copyright in registered design is issued by the Design Office. The duration of the registration of a design is initially ten years from the date of registration but in uses where claim to priority has been allowed, the duration is ten years from the priority date. This initial period of registration may be extended by further period of 5 years on an application made in Form-3 accompanied by a fee of Rs. 2,000/- to the Controller before the expiry of the said initial period of Copyright.